The Complainant is IMD - International Institute for Management Development of Lausanne, Switzerland represented by Bugnion S.A., Switzerland.
The Respondent is Michael D. Gordon of Derby, Kansas, United States of America (“USA”), representing himself.
The disputed domain name <imd.tv> is registered with Name.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2011. On July 27, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On July 27, 2011, Name.com LLC transmitted by email to the Center its verification response confirming, among others, that:
(a) the disputed domain name is registered through it;
(b) the Respondent is listed as the registrant and providing his contact details;
(c) the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the registration of the disputed domain name; and
(d) English is the language of the registration agreement.
The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2011. The Response was filed with the Center on August 18, 2011.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 25, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant is what may compendiously be described as a business school located in Switzerland. According to the Complaint, it has been ranked as one of the best business schools in the world by international newspapers such as The Financial Times, Forbes, The Economist and The Wall Street Journal.
Amongst other things, it has a number of registered trademarks, including:
(a) International Registration No. 569039 for IMD INTERNATIONAL and “sunrise” device. This trademark was registered in March 1991 for goods in International Classes 9 and 16;
(b) United States Trademark Registration No. 1947935 for IMD INTERNATIONAL and “sunrise” device which has been registered on the Principal Register since January 1996 for educational services in International Class 41;
(c) International Registration No. 734057 for IMD INTERNATIONAL and “sunrise” device, registered since April 2000 for a range of goods and services in International Classes 9, 16, 35 and 41;
(d) International Registration No. 1003801 for IMD INTERNATIONAL and “sunrise” device, registered from January 2009 for a range of goods and services in International Classes 9,16, 35 and 41; and
(e) United States Trademark Registration No. 3785000 for IMD INTERNATIONAL and “sunrise” device, which was filed in January 2009, published in February 2010 and registered on the Principal Register on May 4, 2010.
The Respondent claims to be an entrepreneur, although he does not identify what field or fields he conducts his entrepreneurial activities in.
It would appear that the disputed domain name was registered on or about April 4, 2010.
Before the Respondent was notified of the dispute about the disputed domain name, the disputed domain name resolved to a “parking page” (which the Respondent says was generated by the Registrar without any involvement by the Respondent). A print out of the “parking page” included in Annex 16 to the Complaint includes fairly typical “click through” links. A number of these are to entities offering services in competition to the Complainant. None are for the Complainant’s services.
The disputed domain name does not currently resolve to a website of any kind.
Under paragraph 4 of the Policy, the Complainant must prove each of the following three elements:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel considers each of these factors in turn on the basis of the statements and documents submitted by the parties and the rules and principles of law deemed applicable: paragraph 15(a) of the Rules.
There are two parts to this enquiry. First, the Complainant must demonstrate that it has rights in a trademark (whether registered or not). Secondly, if the Complainant does demonstrate rights in a trademark, the Complainant must then show that the disputed domain name is identical or confusingly similar to those trademark rights.
The Complainant has clearly proved ownership of the registered trademarks for IMD INTERNATIONAL and “sunrise” device referred to in section 4 above.
The disputed domain name is not identical to the Complainant’s trademarks, disregarding (as we may for the purposes of this enquiry) the addition of the gTLD to the disputed domain name: the registered trademarks each include the word INTERNATIONAL and the “sunrise” device; neither of which elements is present in the disputed domain name.
The acronym IMD is plainly a prominent and important part of the Complainant’s trademark. The word INTERNATIONAL is plainly descriptive and non-distinctive. While the “sunrise” device is also a distinguishing feature, one would expect that many members of the public would ordinarily refer to the mark as the IMD mark; the acronym IMD naturally suggests itself as the distinctive or identifying feature of the mark.
The Respondent disputes the finding of confusing similarity on the basis that the Complainant’s registered trademarks are limited to particular classes of goods or services and particular geographic locations. In addition, the Respondent points out that the letters IMD are, or the Respondent claims them to be, widely used by a number of parties unconnected to the Complainant.
The Respondent’s arguments are predicated on a misunderstanding of the issue at this stage of the enquiry under the Policy. On this part of the enquiry, what is required is simply a comparison of the disputed domain name itself to the Complainant’s trademarks: see, for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City And Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. This is different to the question under trademark law, which can require comparison of the goods or services for which the trademark is registered and those of any impugned use as well as considerations such as the geographical location of the registrations and the impugned use. Such matters, if relevant, may fall for consideration under other elements of the UDRP policy.
As the acronym IMD is a sufficiently important part of the Complainant’s trademark, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Accordingly, the Complainant has successfully established the first requirement under the Policy.
The second requirement that the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
A respondent may have rights or legitimate interests under the Policy in the circumstances set out in paragraph 4(c) of the Policy. The circumstances set out in paragraph 4(c) of the Policy are examples only, however, and are not an exhaustive numeration of the ways in which rights or legitimate interests can be shown.
While paragraph 4(c) of the Policy states that these are circumstances where the respondent may show rights or legitimate interests, the overall burden of establishing this requirement falls on the Complainant. Nonetheless, in view of the difficulty inherent in proving a negative and because the relevant information is often in the possession of the respondent only, it will be sufficient for the complainant to establish a prima facie case which, if not rebutted, will lead to this ground being established (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0)), paragraph 2.1.
The Complainant contends that the Respondent is not, and has never been, commonly known under the disputed domain name. Nor does he hold any trademark or other rights consisting in whole or in part of the acronym IMD or any expression which would naturally be abbreviated to IMD. The plain inference to be drawn from the Complaint is that the Complainant has not authorised the Respondent to use the acronym IMD nor is there any other association between the parties. The Complainant also relies on the resolution of the disputed domain name to a parking page with “pay-per-click” advertising links, a number of which are to services competitive with the Complainant’s services to rebut any suggestion that the Respondent is engaged in a bona fide offering of products or services.
In these circumstances, the Panel considers that the Complainant has made a sufficient showing to raise a prima facie case of lack of rights or legitimate interests against the Respondent.
In rebuttal, the Respondent points out that the acronym IMD is simply a 3-letter combination which can be an abbreviation or acronym with many meanings. The Respondent notes that there are 24 trademarks registered on the United States Register of Trademarks, of which only 3 are owned by the Complainant. The registrations owned by other parties cover a diverse range of goods and services. Similarly, a search of IMD at “www.abbrievations.com” returns 20 examples of different types of uses including Internet Movie Database, Image Modelling Development, Indian Meteorological Department, International Medical Development, Interactive Molecular Dynamics and so on. Thus, according to the Respondent many individuals, groups and organisations apart from the Complainant use and claim IMD for their own purposes.
One difficulty with this claim, however, is that the Respondent does not claim any association with or authority from any of these other users.
The Respondent also claims to derive a legitimate interest in the disputed domain name as apparently on June 26, 2011, the Respondent filed documents to register a company, iMD LLC in the state of Kansas, USA. The Respondent claims that this was prior to any notification of a dispute with the Complainant. However, as the company registration was not sought until more than one year after the disputed domain name was registered, it cannot of itself, in the Panel’s view, support a claim to legitimate interests.
The use of the disputed domain name to resolve to a “parking page” which contained “pay-per-click” links to a range of advertisers including a number who provide services in competition with the Complainant does not qualify as a bona fide offering of goods or services within the scope of paragraph 4(c)(i) of the Policy.
The Respondent claims that he was not involved in arranging that use and that it was implemented unilaterally by the Registrar. The Respondent claims that he registered the disputed domain name in connection with some business he was developing and in connection with which he subsequently registered iMD LLC as a corporation in Kansas, USA. As noted above, that incorporation took place more than a year after the Respondent registered the disputed domain name. The Respondent does not provide any details about the nature of the use to which he intended putting the disputed domain name or the steps he had taken to implement that business (apart from the incorporation of the company).
It does appear from the Domain Name Registration Agreement used by the Registrar, Name.com, that the Registrar did reserve to itself a right to place advertising on pages using its Parked Domain Service and the Registrar reserved to itself the rights to any income generated by that advertising: see Cl. 19 reproduced in Annex 4 to the Complaint. In what might be thought an extraordinary arrangement, the clause purports to impose on the registrant an obligation to ensure that any such advertising does not violate any third party intellectual or other proprietary rights.
Be that as it may, the appropriateness of that arrangement is a matter between the Registrar and the Respondent. It is plain, however, that the terms of the Domain Name Registration Agreement gave the Respondent power to choose whether or not to use the Registrar’s Parked Domain Service. Moreover, it is clear from the record in this case that the Respondent was able to ensure that advertising of the Complainant’s competitors ceased upon receipt of the Complainant’s demands.
In these circumstances, it is plain that the Respondent was in a position in which he could control whether or not “pay-per-click” link advertising appeared on the website to which the disputed domain name resolved and the content of that advertising. Accordingly, the Panel is not prepared to find that the Respondent has rebutted the prima facie case raised by the Complainant. The Panel therefore finds that the Complainant has established the second requirement under the Policy.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and is being used in bad faith by the Respondent. Generally speaking, finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the domain name to take advantage of its significance as a trademark owned by (usually) the Complainant.
The Complainant contends that the Respondent must have known about the Complainant’s trademark as the Complainant is ranked as one of the best business schools in the world. Alternatively, the Complainant contends that the Respondent had constructive notice of, at least, the Complainant’s registered trademarks in the USA.
The Complainant points out that the Respondent owns about 337 other domain names and his personal email address is associated with about 549 domain names.
Based on these matters, the Complainant points to the nature of the website to which the disputed domain name formerly resolved - a page with “pay-per-click” links, a number of which were to the Complainant’s competitors. As a result, the Complainant contends that the disputed domain name was clearly being used in bad faith and an inference can be drawn that it was registered in bad faith. Alternatively, the Complainant contends that a registrant cannot simply turn a blind eye to the possibility of a domain name which the registrant has registered, infringing another’s rights, citing the decision in Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448.
The Complainant also relies on an offer from the Respondent to sell the disputed domain name to one “Guy” for USD 100,000.
The Respondent denies having any knowledge of the Complainant or Complainant’s trademark when the disputed domain name was registered.
In the circumstances of this case, the Panel does not see the Respondent’s denial of knowledge of the Complainant and the Complainant’s trademark as patently false nor implausible. First, there is the nature of the trademark in question which, apart from the figurative elements, essentially consists of 3 letters. However, as may be expected and the record confirms, there are many other users of the acronym IMD, unconnected with the Complainant, and in many different fields of activity,. Secondly, the registration of some 62 other 3-letter domain names by the Respondent in the same month as the disputed domain name was registered is at least consistent with his claim that his reasons for registering the disputed domain name were unrelated to the Complainant or its trademark in particular: Koninklijke KPN N.V. v. Konstantinos Zoumas, WIPO Case No. D2008-0055 and HSM Argentina S.A. v Vertical Axis Inc, WIPO Case D2007-0017.
It is possible that the Respondent could have learnt of the Complainant through the international newspapers which the Complainant says have ranked it as one of the best business schools in the world. However, the information submitted in the Complaint does not identify dates when those rankings were published or how often. Nor is there any disclosure of the prominence in those publications of the reference to the Complainant. In addition, while the Panel is willing to recognize that the newspapers in question are widely read in many business circles, it is not immediately apparent that the Respondent would necessarily have read all or any of them. To draw an inference of knowledge of the Complainant’s trademark in these circumstances is to go well beyond the bounds of probability into speculation.
In these circumstances, and having regard to the nature of the acronym IMD which is at the heart of both the Complainant’s trademarks and the disputed domain name, the Panel is not prepared to reject the Respondent’s denial of knowledge or targeting of the Complainant or the Complainant’s trademarks.
While some panels have been prepared to adopt a standard of constructive notice, particularly where trademarks are registered in the USA and both parties are located in the USA, that course is not generally accepted under the Policy which, it must be remembered, operates in the international sphere and may involve parties from quite diverse jurisdictions: see WIPO Overview 2.0, paragraph 3.4.
The Panel accepts that a number of well regarded panels have found that sophisticated domainers and others who register large numbers of domain names cannot simply “close their eyes” or engage in willful blindness, as discussed in the Grundfos case cited by the Complainant.
While the present case appears very close to the line, the Panel is in the end not convinced that this is an appropriate case to apply that principle. This is mainly because of the nature of the acronym comprising the disputed domain name, IMD, which is a 3-letter expression in wide use by many entities unconnected with the Complainant and the absence of a clear basis on which to find the Respondent knew of the Complainant or the Complainant’s trademarks.
The Respondent’s offer to sell the disputed domain name for USD 100,000 does not assist the Complainant in the circumstances of this case. The circumstances in which the offer was made have not been fully exposed in the record by the parties and it is not clear to what extent the circumstances are either agreed or in dispute between them. The Respondent says that the offer was made only after 11 months of repeated attempts by a person who identified himself only as “Guy” and who did not identify any relationship with the Complainant. The letter included in Annex 17 to the Complaint in support of the offer having been made appears consistent with this version of events. Bearing in mind that the disputed domain name consists of a 3-letter acronym which would have intrinsic value in itself, therefore, the Panel is unable to infer registration in bad faith from that conduct.
In these circumstances, while the Panel would find that the disputed domain name has been used in bad faith (at least until the Complaint was notified of the dispute by the Respondent), the Complainant has not established that the disputed domain name was registered in bad faith. Accordingly, the Complaint must fail.
For all the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Sole Panelist
Dated: September 7, 2011